deKieffer & Horgan, PLLC specializes in assisting companies whose products are being diverted or counter-feited, including a number of Fortune 500 and Fortune 100 companies.  Donald E. deKieffer, the head of deKieffer & Horgan, PLLC’s Antidiversion and Anticounterfeiting Practice, is a former General Counsel to the U.S. Trade Representative and an internationally renowned expert in antidiversion and anticounterfeiting.  A member of the Product Surety Task Force (both Food and Pharmaceuticals) of the Food & Drug Administration, he has spoken and written extensively on the subject of international supply chain security and product integrity and has represented more than fifty brand name owners (mostly manufacturers of consumer goods and pharmaceuticals) in diversion, counterfeiting, and product tampering cases.

Diversion, one of the fastest-growing crimes in international commerce, typically occurs when a manufacturer of a consumer product is approached by someone posing as a buyer with an order for a large quantity of the product purportedly destined for a remote foreign market.  The unsuspecting U.S. manufacturer fills the order at a substantial discount, since it need not build into the selling price its costs for advertising, distribution, and other expenses in the supposed destination.  When the diverter receives the goods, however, he sells them not in the remote foreign market but the United States, sometimes exporting and then re-importing them.  Typically, the diverter sells the diverted goods to large retail chains or into its own underground network.  Diverters have sometimes used the profits from such sales to fund terrorist organizations or mask other criminal activities, such as money laundering.  This practice, which is extremely difficult to detect, seriously disrupts the marketing efforts of U.S. companies.  While there are certain legal remedies against diversion, the most effective solution is to develop a secure supply chair; and deKieffer & Horgan, PLLC counsels its clients on techniques for protecting their supply chains.

A counterfeit good is an imitation made with the intent to misrepresent the good’s content and/or origin.  Counterfeiting most frequently occurs when the genuine good is protected by a trademark or a patent.  The U.S. economy loses millions of dollars annually in tax revenue and tens of thousands of jobs because of the manufacture, distribution, and sale of counterfeit goods.  The low cost of counterfeit goods also makes it harder for legitimate retailers to compete in the marketplace.  In the past few years, counterfeiting has progressed from fake money and luxury handbags to electronics and prescription medications.  In the pharmaceutical industry alone, there have been more than 150 reported incidents of counterfeit and mislabeled products being sold by legitimate pharmacies over the past five years.  The Secretary of Commerce and the U.S. Trade Representative have stated that counterfeit medicines are estimated to have accounted for almost 10% of world trade in medicines in 2004.  In short, counterfeiting is not a victimless crime but one that hurts legitimate businesses and places at risk the health and wellbeing of thousands of people.

Counterfeit and diverted products enter the world marketplace through a number of channels, not all of which are within the jurisdiction of U.S. courts.  deKieffer & Horgan, PLLC advises clients on specific techniques for thwarting the international  distribution of diverted and counterfeit products, including foreign registration and recordation of trademarks, high-tech marking and identification of products, and the use of inspection services to prevent diversion.

deKieffer & Horgan, PLLC has developed EDDI, Inc., the most comprehensive independent database in the country exclusively devoted to identifying known and suspected international diverters.  As of June 2007, this database had over 260,000 records.  Subscribers receive fast, accurate information on individuals and companies which have been identified as having links with international diverters and counterfeiters.  This is a first line of defense against diverters that can alert clients to the necessity of conducting additional research about suspect customers.  It is also a useful tool in litigation by companies that have become victims of diverters. 

RELEVANT PUBLICATIONS AND PRESENTATIONS BY D&H, PLLC ATTORNEYS

J. Kevin Horgan, Cold Chain Distribution for Pharmaceuticals, presented in seminar entitled Customs Informed Compliance and C-TPAT, sponsored by Pharma IQ, a division of the International Quality & Productivity Center, Philadelphia, PA (Sept. 24, 2008).

Donald E. deKieffer, Trade diversion as a fund raising and money laundering technique of terrorist organizations, Counterfeiting – the Financing of Terrorism, eds. Thomas Biersteker & Sue E. Eckert (Routledge, 2007).

Frank A. Orban, III, Taking Advantage of and Being Taken Advantage of in the Chinese Market - Exporting, Investing, and IP Protection in Contemporary China, US Patent & Trademark Office Conference on Protecting Intellectual Property in China & the Global Market Place, Philadelphia, PA (2007).

Donald E. deKieffer, The Internet and the Globalization of Counterfeit Drugs, Journal of Pharmacy Practice, Vol. 19, No. 3 (2006).

Donald E. deKieffer, Trojan Drugs: Counterfeit and Mislabeled Pharmaceuticals in the Legitimate Market, American Journal of Law & Medicine, Vol. 32, Nos. 2 & 3 (2006).

Donald E. deKieffer, Potential Liability for Counterfeit Medications, Journal of Pharmacy Practice, Vol. 19, No 4 (2006).

Donald E. deKieffer, Counterfeit Drugs in the Supply Chain, Pharmaceutical Business Strategies (Sept./Oct. 2004).

Donald E. deKieffer, The Mexican Drug Connection:  How Trade in Pharmaceuticals has Wrecked the FDA, 9 Southwestern Journal of Law and Trade in the Americas 321 (2003).

Gregory S. Menegaz, Trade-Related Aspects of Intellectual Property, in The World Trade Organization: Multilateral Trade Framework for the 21st Century and U.S. Implementing Legislation, ed. T. Stewart (1996). 

Donald E. deKieffer, GATT Strengthens International Intellectual Property Protection, Washington Legal Foundation; Legal Backgrounder, Vol. 10, No. 3 (January 1995).

J. Kevin Horgan, U.S Patents, Trademarks and Copyrights after the Uruguay Round, Corporate Counsel’s International Adviser, Issue No. 116 (January 1995).

Donald E. deKieffer, U.S. Trade Policy Regarding Intellectual Property Matters, Legal Publications, Current Law and Practical Solutions:  NAFTA (North American Free Trade Agreement) Critical Business and Legal Issues (Washington Edition) (March 1994).

Donald E. deKieffer, U.S. Trade Policy Regarding Intellectual Property Matters, International Trade & Intellectual Property: The Search for a Balanced System, edited by George R. Stewart, Myra J. Tawfik and Maureen Irish (Westview Press, 1994).

J. Kevin Horgan, Trademark Counterfeiting in the United States and Abroad: “The Barbie Doll Case,” presented in seminar entitled Detention of Imported Merchandise Suspected of Infringing a U.S. Copyright After Miss America Organization v. Mattel, San Francisco, CA (Nov. 8, 1991).

Donald E. deKieffer, Current Issues in International Intellectual Property Protection, Corporate Counsel's International Advisor, Issue No. 30 (Nov. 1987).

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